Breach of Open Source Software License Allows Injunction for Copyright Infringement

Case: Jacobsen v. Katzer, Fed. Cir. No. 2008-1001 (8/13/08)

The One Sentence Summary: Applying Ninth Circuit law, the Federal Circuit reversed a denial of preliminary injunction, holding that an open source copyright license requiring attribution as a condition of use and distribution of software could be enforced by preliminary injunction and remanded for a determination of whether preliminary injunction standards were met.



Federal Circuit Holdings:

• The Federal Circuit had jurisdiction over the appeal because of patent claims in the case, but would apply Ninth Circuit law to the copyright issues on this appeal.
• In determining whether to issue a preliminary injunction, the Ninth Circuit requires demonstration of (1) a combination of probability of success on the merits and the possibility of irreparable harm; or (2) serious questions going to the merits where the balance of hardships tips sharply in the moving party's favor.
  
• In copyright cases, the Ninth Circuit has applied a presumption of irreparable harm, but this presumption may need to be reconsidered in light of the Supreme Court's decision in eBay Inc. v. MercExchange, 547 U.S. 388 (2006).
• Generally, a copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement, and can sue only for breach of contract. Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999); Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998). If, however, a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir.1989); Nimmer on Copyright, section 1015[A] (1999).
• The Artistic License at issue created conditions to use of the software, and was a restriction on the scope of the license. Accordingly, plaintiff could sue for copyright infringement and seek an injunction.